IPBiz

Tuesday, September 30, 2014

The issue on appeal is whether the U.S. Patent and
Trademark Office’s (PTO) Patent Trial and Appeals Board
erred in not rejecting on grounds of obviousness claims
8, 9, 12, and 13 of U.S. Patent No. 7,344,450 (the ’450 patent).
These claims are directed to a method involving press fitting or latching
weights to a golf club.

Because the Board erroneously failed to consider
the general knowledge possessed by one skilled in the art of press
fitting in applying the obviousness standard, we vacate
the Board’s decision and remand for further proceedings

Specifically

We find that the Board was obligated to consider whether it would
have been obvious to utilize press fitting even though the
prior art did not disclose the use of press fitting for the
specific purpose of the invention (...)

There is no question here that press
fitting as a means of attachment was common knowledge at the time
of the invention.

Wikipedia is mentioned:

quoted a Wikipedia
article (which is itself
indicative of common knowledge)
on press fitting as being “[with]in the knowledge
of one of ordinary skill in the art,” App. 144
(Piotrowski Decl.¶¶ 72– 73); see also, e.g. ,
Vistan Corp. v. Fadei USA, Inc.,
547 F. App’x 986, 990
(Fed. Cir. 2013) (relying in part on
an expert’s invocation of Wikipedia
to determine what a person of ordinary skill in the art
would understand a term to mean as part of a written description inquiry).

A 1961 CCPA case is brought up as evidence:

In addition to this evidence,
In re Dulberg, 289 F.2d 522 (C.C.P.A. 1961), was cited to the Board
and further illustrates that press fitting was well known
as a means to attach parts of a device, and has been so at least since
1961.
In fact, press fitting was not just well-known at the
time of Dulberg ; it was so well-known that our predecessor court
found that “[n]o specific prior art teaching would
be necessary to show that operation.” Id.at 523.

Even without literal infringe-
ment of a certain claim limitation,
a patentee may estab-
lish infringement under the doctrine of
equivalents if an element of the
accused device “performs substantially the
same function in substantially the same way to obtain the
same result as the claim limitation.”
AquaTex Indus., Inc. v. Techniche Solutions
, 419 F.3d 1374, 1382 (Fed. Cir.2005) (citation omitted)
(quotation marks omitted).

As to ambiguity in the file history:

And to the extent this statement is ambiguous, we note that the Supreme Court
has stated “[w]here no explanation is established . . . the
court should presume that the patent applicant had a
substantial reason related to patentability for including
the limiting element added by amendment.” Warner-Jenkinson, 520 U.S. at 33.

The district court should have proceeded under the
presumption that prosecution history estoppel applies.
Millipore then had the burden to rebut the presumption
through one of the three enumerated exceptions, but
Millipore chose not to present any argument on this issue
to the district court.
See Oral Arg. 24:06 - 24:20 ,
available at http://www.cafc.uscourts.gov/oral-argument-
recordings/14-1140/all (“Q:
You never argued in the alternative that
if in fact there was a conclusion by the trial court that the
amendment was narrowing or limiting, that you could
rebut the presumption that would arise under Festo?
A:That is correct, your honor . . . .”)

Tobacco for biofuel?

Here’s an interesting idea from scientists at UC Berkeley and Lawrence Berkeley National Laboratory: tobacco to fuel. According to KQED Quest, by adding algae and cyanobacteria to tobacco, the researchers can create a very efficient and cost-effective biofuel. “‘All the things that make tobacco bad are really good for fuels,’ said Bill Shelander [of LBNL],” according to the post. But even though it won’t compete with food crops, there are still issues with this potential biofuel, including heavy pesticide use.

On September 30, 2014, US patent 8,847,010 issued. Titled Engineered tobacco biomass with increased oil production and assigned to Biotechnology Foundation, Inc. and Thomas Jefferson University , its abstract:

The present invention relates to a genetically modified plant having an increased amount of oil in its green biomass as compared to the oil in the green biomass of its non-genetically modified counterpart. The plants may be used for producing bio-fuels such as biodiesel fuel.

AND claim 3:

A process for making a biofuel, comprising (a) genetically modifying a tobacco plant so that is has an increased amount of oil in its green biomass as compared to the green biomass of its non-genetically modified counterpart, and wherein said genetically modified tobacco plant has increased expression of: (1) at least one first gene, wherein said first gene encodes an AtDGAT1 polypeptide and wherein said first gene is operably linked to a first promoter which is CaMV 35S; and (2) at least one second gene, wherein said second gene encodes an Arabidopsis LEC2 transcription factor, and wherein said second gene is operably linked to a second promoter wherein said second promoter is an ethanol inducible promoter; (b) extracting oil from at least the green biomass of the tobacco plant; and (c) subjecting the extracted oil to a transesterification process to produce said biofuel.

Crowdsourcing and growing plants

Note a US patent which issued on Sept. 30, 2014 titled Programmable lighting with multi-day variations of wavelength and intensity, optimized by crowdsourcing using an online social community network .

The abstract of US 8,847,514 :

A programmable luminaire has arrays of LED's producing different wavelengths of light. A light map specifies how wavelengths of light reaching a plant or other organism are changed throughout a virtual day and over different growth phases of a plant's life. A host interface has a GUI light-map editor allowing a user to edit individual wavelengths in a light map that can be uploaded and shared with other users on a crowdsourcing web site. A large on-line community optimizes the light maps for a specific species of plants or animals. The wisdom of crowds converges until the best wavelengths, intensity and duration are arrived at through ranking, resulting in maximum desired output. Light maps are voted on by users and ranked based on votes, links to other light maps, and yield results. The LED's may be dimmed at intervals during the day for shading and sun fleck.

Yes, I noticed the ethics violation WRT the Chum-Hum advance fees. Feels like Alicia (i.e. the show) simply made an error by stating that an advance fee would be the source of the bail funds in an official meeting, duly noted in the meeting minutes.

Tracy Smith on popular tv Sunday at 9am, including the Good Wife. What to watch now and what to record. Mad Men is the most recorded tv. Sunday is the most popular tv night of the week. 122 million viewers. Alfred Hitchcock premiered on a Sunday night in 1955. Bonanza and 60 Minutes were on Sunday. In the 1970s and 1980s, Sunday Night was "big event," including Gone with the Wind in 1976. In 1999, the Sopranos of HBO. 10 million viewers watched the first season. Also, Sex and the City. Mad Men started on Thursday but switched to Sunday. Three years ago, Good Wife went from Tuesday to Sunday. An audience for quality television. Collectively, Sunday programs are for watching a show together. Communion. Breaking Bad had the most tweets. YouTube videos of people watching Game of Thrones.

Saturday, September 27, 2014

Proterro and Bunge do deal on biofuels

From a press release in BusinessWire about a deal between (Proterro (of New Jersey) and Bunge (of Brazil):

Under a joint development agreement, a pilot plant is being commissioned at Bunge’s Moema Fazenda sugarcane mill, where two of Proterro’s photobioreactors have been installed to cultivate Proterro’s cyanobacteria for production of fermentable sugars for ethanol production.

The Bunge pilot plant will replicate the operations of Proterro’s U.S. pilot plant in Orlando, Florida, where four photobioreactors are currently deployed.

“Testing performed at this site in Brazil is particularly valuable to our development and progress, as it represents a climate, geography and CO2 source that are representative of our anticipated commercial production plant,” said Proterro CEO Kef Kasdin.

“Since our sugar-production technology is complementary to sugar-mill operations, success could result in an option for low-cost expansion of ethanol production in Brazil, while helping to meet environmental challenges and promote sustainable development of biofuel production,” she continued.

Proterro’s photobioreactor, cyanobacteria and its entire sugar-making process have been granted patents by the United States Patent and Trademark Office.

New Jersey based author Isabella Tanikumi sues Disney for copyright infringement over "Frozen"

Another [count in the complaint] says both the books and the film center around two sisters with opposite colored hair, each with their own horse. She goes on, saying in both cases, the older sister accidentally hurts the younger sister, and the younger sister loses her memory of the incident.

In the book, Tanikumi says the sisters have male romantic interests named Hans and Kristoff. In "Frozen," the sisters pair with Hans and Christoff. She also cites "hands to the sky with sprinkles," saying her book cover and the film's DVD cover are alike.

The topic of inequitable conduct arose in the SpaceNews post by Dan Leone:

Still unsettled is the question of whether the inventors listed on Blue Origin’s patent application, which include Amazon.com and Blue Origin founder Jeff Bezos, knew about any of the documents referenced in SpaceX’s filing prior to seeking a patent in 2009.

“The inventor doesn’t have a responsibility to go out and look for prior art, but if he does find prior art, he has to tell the patent office,” [Andrew] Rush said. “So If Jeff Bezos was aware of this paper SpaceX is citing, he would have had a responsibility to give a copy of that paper to the patent office because it is relevant to his technology. He would have had to do that at the time he applied for the patent.”

Neither SpaceX spokesman John Taylor nor Blue Origin spokeswoman Brooke Crawford would comment for this story. Scott Talbot, a Reston, Virginia-based attorney for Cooley LLP, the firm that prepared SpaceX’s request for an inter partes review, also declined to comment.

As a first point, the patent board (PTAB) does not consider inequitable conduct in an inter partes review (IPR). Thus, the "unsettled question" mentioned in the SpaceNews post is irrelevant to the ongoing proceeding. Second, inequitable conduct, post-Therasense, is difficult to establish. IPBiz notes that a good discussion of "how" inequitable conduct is applied, post-Therasense, is found in the dissent by Judge Newman in AMERICAN CALCAR, INC. , ironically a case wherein inequitable conduct was found in a 2-1 vote at the CAFC. To establish inequitable conduct, there is a requirement of materiality of the reference, intent to deceive, and a test of whether the patent issued "but for" the omission of the reference. The American Calcar case presents an inversion of the present fact pattern in Blue Origin in the sense the key reference at issue in American Calcar was before the Board in a re-exam and patentability was found, BUT two CAFC judges found inequitable conduct anyway. Judge Newman wrote of this in her dissent, questioning "how" the but-for standard could have been met:

We need not speculate about whether the PTO would
have granted the Calcar patents “but-for” the information
in the Owner’s Manual and the photographs, for the
PTO’s reexamination of the ’497 patent provides the
answer: the PTO confirmed patentability. Reexamination
was conducted in full view of not only the targeted information,
but also Honda’s Preliminary Invalidity Contentions.
The purpose of reexamination is to provide PTO
expertise in determining patentability. This procedure
was followed, and established that the challenged information
was not “material” to patentability as determined
by the PTO. That ruling was not appealed. My colleagues’
contrary holding is not available.

A New Jersey connection is mentioned in the SpaceNews post: A late December launch — for Fort Lee, New Jersey-based satellite operator Orbcomm — is another candidate for a barge landing, SpaceX said following its last launch for Orbcomm in July.

As we have held, inequitable conduct is “inequitable in nature,” and thus the “district court was in no way bound by the jury’s finding of no inequitable conduct in this case.” Calcar II, 651 F.3d at 1334. In any event, after the jury submitted its adviso- ry verdict, the district court requested thousands of pages of testimony from Calcar’s previous litigation. Order Requesting Supplemental Briefing, Am. Calcar, Inc. v. Am. Honda Motor Co., No. 06-cv-2433 (S.D. Cal. Sept. 24, 2008), ECF No. 566. This testimony included assertions by Mr. Obradovich that contradicted those made in these proceedings, which led the district court to its determina- tion that Mr. Obradovich lacked credibility. This was evidence that the jury did not see. Therefore, we see no reason why the jury’s advisory verdict suggests a reason- able alternative to the district court’s inference.

By a 2 to 1 vote:

For the aforementioned reasons, we affirm the district court’s judgment that the ’497, ’465, and ’795 patents were obtained through inequitable conduct and are thus unenforceable.

In dissent, Judge Newman observed

The only issue is whether Mr. Obradovich committed inequitable conduct by not providing the PTO, when the parent patent application was filed, with the Acura Owner’s Manual and the photographs that the Calcar employees took of the Acura display. These materials were provided to the PTO on reexamination of the ’497 patent, and patentability was confirmed by the PTO in light of that additional information.

The factual premises of “inequitable conduct” were not established, for there was not “but-for” materiality and no evidence of intent to deceive. The panel majority distorts the Therasense standards, ignores the PTO reexamination, casts the jury aside, and generally disre- gards the safeguards that this court adopted en banc. I respectfully dissent, for the criteria of inequitable conduct are plainly not met.

AND

Nonetheless, my colleagues rule that the patents are unenforceable based on the initial failure to send the Owner’s Manual and photographs to the PTO. The ineq- uitable conduct with which Mr. Obradovich is charged is that he “did not tell Mr. Yip [his patent attorney] about his experience with the 96RL, nor did he provide Mr. Yip with the Owner’s Manual or the photos of the navigation system display screens.” Dist. Ct. Op. at 11. However, the PTO established, on reexamination of the ’497 patent, that the purportedly withheld information was not material to patentability. In accordance with Therasense this ended the inequitable conduct inquiry, for the PTO sus- tained patentability in view of this information.

As to inferences:

My colleagues “infer” clear and convincing evidence of deceptive intent from Mr. Obradovich’s initial failure to send his patent attorney the Owner’s Manual and the photographs of the Acura display. They postulate that a savvy inventor and businessman such as Mr. Obradovich would have known the information was material to pa- tentability and would therefore withhold it in order to deceive the PTO. However, a more likely inference is that a savvy inventor and businessman would know that a patent obtained through concealment of a material refer- ence is not a reliable commercial asset.

The US Navy's commercial scale biofuels programs

The new initiative demonstrates how quickly the biofuel industry could move away from farmlands and embrace a broader variety of non-food feedstocks that don’t compete with agriculture for growing space. These are not pilot projects, they are full commercial-scale operations.

In partnership with Agriculture and Energy, the Navy is investing in three new contracts for “drop-in” biofuels, though not quite at 100 percent drop-in, though. The performance of a 50-50 blend was verified in action during the 2012 RIMPAC exercises, and the Navy is apparently sticking with that for now.

The RIMPAC (that stands for Rim of the Pacific) exercise included biofuel for Navy aircraft as well as ships, btw.

We’re particularly interested in the Emerald Biofuels project, because when the Navy first announced that it would use biofuel from chicken fat and other waste fats that seemed pretty far-fetched, but apparently it’s going to happen.

Emerald’s contract will result in the construction of an 82 million gallon-per-year refinery using waste fat feedstock. It will be located on the Gulf Coast.

The other two projects are more modestly scaled. One, by Fulcrum BioEnergy, involves a 10 million gallon refinery in Nevada. The feedstock will be municipal solid waste.

The other one is a 12 million gallon-per-year operation by Red Rock Biofuels, which will use waste biomass from forestry operations. That one is located up in Oregon.

Hmmm…Gulf Coast…Nevada…Oregon…If you step back and take a meta-view, you can see how the Navy biofuel program is a win-win.

Shares in gas-to-liquids technology company Velocys plc nudged new highs on Monday as the AIM-quoted company revealed its customer Red Rock Biofuels has been awarded a US$70 million grant to build a biomass-to-liquids plant in Oregon. The plant, which will convert 170,000 tons per year of forestry and sawmill waste into 1,100 bpd of ultra-clean transportation fuels, will use Velocys' Fischer-Tropsch (FT) technology.

Some of the people at Red Rock came from Pacific Ethanol.

The Denver Business Journal noted: BizWest reports the company [Red Rock] was formed in September 2011 by former employees of Pacific Ethanol Inc.

Thursday, September 25, 2014

UPI SEMICONDUCTOR CORPORATION v. ITC

Before the court are the appeal of respondentintervenor
uPI Semiconductor Corp. (“uPI”) and the
companion appeal of complainant-intervenors Richtek
Technology Corp. and Richtek USA, Inc. (together “Richtek”)
from rulings of the International Trade Commission
in an action to enforce a Consent Order, Certain DC-DC
Controllers and Products Containing Same, Inv. No. 337-
TA-698 (75 Fed. Reg. 446). We affirm the Commission’s
ruling that uPI violated the Consent Order as to the
imports known as “formerly accused products,” and affirm
the modified penalty for that violation. We reverse the
ruling of no violation as to the “post-Consent Order”
products. The case is remanded for further proceedings in
accordance with our rulings herein.

Trade secrets were involved:

The ALJ found that the formerly accused products
contained or were produced using Richtek’s trade secrets
and that the formerly accused products alone, or incorporated
into downstream products, infringed the ’190, ’470,
and ’717 patents. The ALJ also found that the post-
Consent Order products infringed the ’470 and ’717 patents.
However, the ALJ found that the post-Consent
Order products were independently developed, and therefore
not produced using Richtek’s trade secrets, due to
“clean room” procedures uPI implemented. (...)

Richtek’s petition for review, in turn, challenged the
ALJ’s finding that the post-Consent Order products did
not embody Richtek’s trade secrets. Richtek argued that
the post-Consent Order products are substantially similar
or identical to the formerly accused products and the
asserted trade secrets, and that the post-Consent Order
products continue to be produced using Richtek’s trade
secrets. (...)

The full Commission affirmed the ALJ’s findings that
the formerly accused products were produced using or
contained Richtek’s trade secrets and that the post-
Consent Order products were produced without Richtek’s
trade secrets. (...)

Richtek appeals the Commission’s ruling that the
post-Consent Order products do not use or contain Richtek’s
trade secrets, but does not appeal the rulings as to
Consent Order violations concerning the ’190 patent,
the ’470 patent, or the ’717 patent.

Within the analysis

uPI states that, despite its agreement by Consent Order
not to knowingly aid, abet or induce importation of
products produced using or containing Richtek trade
secrets or infringing Richtek patents, this provision
cannot reach third-party importations. uPI states that
Kyocera Wireless Corp. v. International Trade Commission,
545 F.3d 1340 (Fed. Cir. 2008), prohibits the Commission
from excluding imports of non-respondents absent
a general exclusion order. uPI states that because this
case was terminated by Consent Order, with no general
exclusion order, no penalty can be based on importations
by non-respondents, whether or not they were knowingly
aided or abetted by uPI.

CAFC reviews procedure for granting stay of district court proceedings during CBM review by USPTO

Traditionally, we have reviewed district court decisions
on motions to stay pending U.S. Patent and Trademark
Office proceedings under the abuse of discretion
standard. VirtualAgility Inc. v. Salesforce.com, Inc., No.
2014-1232, 2014 WL 3360806, at *2 (Fed. Cir. July 10,
2014). The AIA, however, provides this court with the
authority to conduct more searching review of decisions to
stay pending CBM review. Specifically, the AIA provides
that this court “shall review the district court’s decision to
ensure consistent application of established precedent,
and such review may be de novo.” AIA § 18(b)(2).

Appellants’ argument on appeal rests on the single
premise that the PTAB is not authorized to conduct CBM
review based on § 101 grounds. Consequently, according
to Appellants, the district court would not be bound by the
results of the CBM review and, as such, “the PTAB’s
review of the ’582 patent cannot simplify this case.”
Appellants’ Br. 5. Instead, in Appellants’ view, a stay will
unduly prejudice Appellants, present a clear tactical
advantage to Appellees, and increase—not decrease—the
burden of litigation.

Appellants raised essentially this same argument
with the district court, which found the argument unpersuasive.
Specifically, the district court acknowledged the
risk that “there is a definitive legal ruling that Section
101 is not a proper basis for a CBM review” and the CBM
review thus simplifies very little. Hearing Transcript at
42. Still, the district court concluded that “[such] risk is
relatively small and certainly is not big enough to cause
this first factor to disfavor a stay.” Id. at 43.

The CAFC found such reasoning to amount to an improper collateral
attack:

Such review “amounts to an improper collateral attack on the PTAB’s
decision to institute CBM review, and allowing it would create serious
practical problems,”

The bottom line:

Having rejected Appellants’ sole argument on appeal,
we conclude that the district court did not abuse its
discretion in granting the stay. Further, consistency with
established precedent was not at issue in this case and no
other compelling reason for a more searching review was
presented.

Tuesday, September 23, 2014

Plagiarism consequences in the real world?

An article relating to plagiarism charges against Mary Burke begins:

“I will make it my personal mission to give you an F and get you expelled from the University of Wisconsin,” stated one of my professors as he outlined his policy on plagiarism and cheating. His rationale behind this logic is that in the real world, taking someone else’s ideas as your own would not be tolerated, and it can have much more severe consequences than just a failing grade. In the real world, consequences include locking one in jail and tossing away the key.

Take the smartphone industry for example. In 2012, Apple decided to sue Samsung for patent infringement. After two years of fighting in the courts, Apple won the case, and as a result Samsung had to pay Apple $929 million to make up for their cheating. All of this goes to show that cheating is not worth it, and that there are real consequences to stealing someone’s work whether it is patent infringement or plagiarizing.

One recalls that Joe Biden, currently Vice-President, copied without attribution from law review articles for a paper at Syracuse Law School, did get an F but was not expelled, and went on to a lengthy career.

As to the reference to "929 million," note the text

Because of a quirk of design patent law, however, Samsung was ordered to pay Apple all of the profits associated with the products that contained these designs — no matter the import of the designs, their relative contribution to Samsung profits, or any effect on Apple. Samsung’s penalty totaled $929 million, the sum now under appeal.

No word in investigation of plagiarism by Senator John Walsh

Which way for the Supreme Court in Teva v. Sandoz and FRCP 52 in patent cases?

On 19 Sept. 2014, a panel consisting of Ruben Castillo, Faith Hochberg, and Randall Rader discussed, among other things,
Teva v. Sandoz. For some background on the issue, see http://www.shb.com/newsletters/IpQ/IpQ.6.3.pdf.

Motorola also was mentioned, with discussion of the views of Judge Posner.

Responding to the demands of patent assertion entities (PAEs)

Although ignoring such a letter and hoping the patent owner will go away is one option, it is not without risk. Usually, such an approach turns out to be nothing more than wishful thinking. - See more at: http://www.mclane.com/resources/article-detail.aspx?id=1058#utm_source=Mondaq&utm_medium=syndication&utm_campaign=View-Original

HOWEVER, the 10th Annual IP Conference held by Foley & Lardner on Sept. 19, 2014 [titled "Evolution to Revolution"] included views by Matthew Miller of GroupOn which are somewhat different. Miller noted his budget does not allow negotiation based on "cost of defense." Using an analogy of a puffer fish, Miller effectively introduced the options of pay, slay, or spay.

When asked if the option of not accepting the demands of patent assertion entities was wise, Miller came up with one of the better lines of the conference, to the effect --the day I get burned there will be another guy sitting in this seat giving this talk--.

Washington Post: "The patent office’s response to the revelations of fraudulent practices has shifted dramatically."

“Since assuming my leadership position at this agency, I have made it my personal goal to ensure that our operations serve as a model of efficiency and effectiveness,” wrote Lee, who is effectively the agency’s head in the absence of a permanent director. “I take these matters very seriously and I will continue to connect with you in the coming days and weeks and keep you informed as we review our operations and look for ways to improve.”

Sunday, September 21, 2014

CBS Sunday Morning on September 21, 2014

The cover story was done by Jan Crawford (UofC Law, 1993) on "common core" education. Jane Pauley did a piece on an 11 year old from Ferguson, Missouri.

A teaser for the Crawford story:

The Common Core is now at the core of a heated national controversy. Launched by state officials in 2009, the Core outlines what students must master at every grade level. (...)

But now some states are re-thinking their approach. Conservatives have branded the Core as the federal government "overreaching" into state affairs; Louisiana Governor Bobby Jindal is suing the White House over it. And in New York -- one of the bluest of states -- an estimated 60,000 students have now opted out of Common Core testing.

Of the Pauley piece on Marquis Govan:

a boy approached the microphone at a meeting of the St. Louis County Council:

"I would just like to say that the people of Ferguson, I believe, don't need tear gas thrown at them. I believe they need jobs."

Meet 11-year-old Marquis Govan.

"Where are all the African-American police officers in our community?"

In two minutes' time Govan tackled Ferguson's problems with unemployment, housing, and diversity:

"You're paying attention to the wrong things. You're paying attention to the looting and things like that, when the real issues aren't being solved. There's a reason why those people are out there."

Seth Doane did an interesting story about interrogation of German prisoners (including scientists) during World War II:

During WWII, Army Intelligence interrogated high-ranking prisoners-of-war at a secret installation in Alexandria, Va., dubbed "P.O. Box 1142." Seth Doane reports on this little-known piece of history that took place just a few miles from the nation's capital.

Saturday, September 20, 2014

Mandamus and trade secrets

Not satisfied with that relief , TUC now seeks an order from
this court compelling
additional information relevant to
its invalidity defense .
Park opposes
the petition and
moves for sanctions.
For the following reasons, we deny
the petition and motion

As to facts, the patentee Isola initially sued TUC and Park, but later
settled with Park. Park had potential prior art information that TUC wanted.
The district court denied the full scope of TUC's subpoena to Park, and
TUC sought mandamus.

At issue

In March 2014, TUC subpoenaed Park, seeking in-
formation concerning: (1) the ingredients and/or materials
used to prepare each resin composition in the manufac-
ture of Park’s N4000-13 prior to September 24, 1996; (...)

After Park objected on the grounds that the information requested
constituted or containedtrade secret and other highly sensitive competitive infor-
mation, TUC filed a motion to compel. (...)

Although the district court was persuaded that
TUC was entitled to more information
than Park had already turned over to TUC, it refused
to grant the full scope of TUC’s request

Wednesday, September 17, 2014

CAFC discusses laches and equitable estoppel in SCA Hygiene

The outcome of SCA Hygiene vs. First Baby Products

Accordingly, we affirm the district court’s grant of summary judgment
as to laches, reverse its grant of summary judgment
as to equitable estoppel, and remand
for further proceedings consistent
with this opinion

Congressman Frank Wolf asks US attorney to look into possible fraud at the US Patent Office

“There must be a zero-tolerance policy for fraud and abuse,” Wolf wrote Monday (Sept. 15, 2014) to U.S. Attorney Dana Boente, the top federal prosecutor for the Eastern District of Virginia, which encompasses Northern Virginia and the Richmond and Tidewater areas.

“I believe it is important for federal prosecutors to independently review these allegations for criminal wrongdoing,” Wolf wrote. “A clear message must be sent to anyone in the government that fraudulent activity is unacceptable and will be met with punishment.”

IPBiz notes that, although much of the buzz is about telecommuting, the underlying problem is about how the count system is implemented, not about "where" the examiners do their work. Examiners filing incomplete Office Actions to make counts is a problem.

Fallout from CAFC decision in Apple/VirnetX case

Other public companies that rely on patent licensing fell with VirnetX yesterday. Spherix Inc., (SPEX) which has sued Cisco Systems Inc. and Juniper Networks Inc. over patents it bought, dropped 9.5 percent. Marathon Patent Group Inc., Acacia Research Corp. and Itus Corp. fell about 4 percent before recovering.

As to the ongoing debate about "low quality" patents, one should note that the validity of the VirnetX claims was affirmed by the CAFC (text: we affirm the jury’s findings that none of the asserted claims are invalid ). The "big deal" was about the calculation used for damages, with the particular Nash Bargaining Solution firmly rejected.

Since the VirnetX’s expert relied on the iOS devices as the “‘smallest salable units,’ without attempting to apportion the value attributable to the VPN On Demand and Facetime features,” the legal error was not harmless. Put another way, VirnetX sought to have the jury use the sales price of an iPhone when calculating infringement of its patents that covered two specific components of that product, without demonstrating that those components drove customer demand for the phones.

Tuesday, September 16, 2014

Apple escapes the Nash Bargaining Solution in VIRNETX case

For the reasons that follow, we affirm the jury’s findings
that none of the asserted claims are invalid and that
many of the asserted claims of the ’135 and ’151 patents
are infringed by Apple’s VPN On Demand product. We
also affirm the district court’s exclusion of evidence relating
to the reexamination of the patents-in-suit. However,
we reverse the jury’s finding that the VPN On Demand
product infringes claim 1 of the ’151 patent under the
doctrine of equivalents. We also reverse the district
court’s construction of the claim term “secure communication
link” in the ’504 and ’211 patents and remand for
further proceedings to determine whether the FaceTime
feature infringes those patents under the correct claim
construction. Finally, we vacate the jury’s damages
award and remand for further proceedings consistent
with this opinion.

Of the Nash bargaining solution:

For the reasons that follow, we agree with the courts
that have rejected invocations of the Nash theorem without
sufficiently establishing that the premises of the
theorem actually apply to the facts of the case at hand.
The use here was just such an inappropriate “rule of
thumb.”

(...)

Indeed, Weinstein’s thin attempts to
explain his 10% deviation from the 50/50 baseline in this
case demonstrates how this methodology is subject to
abuse. His only testimony on the matter was that although
he “considered other splits,” he ultimately determined
that a 10% deviation—resulting in a 45/55 split—
was appropriate “to reflect the fact that Apple would have
additional bargaining power over VirnetX back in . . .
2009.” JA. 1708–09. Such conclusory assertions cannot
form the basis of a jury’s verdict. See Gen. Elec. Co. v.
Joiner, 522 U.S. 136, 146 (1997) (noting that where an
expert considers relevant material but fails to provide an
opinion explaining how that material leads to his conclusion,
“[a] court may conclude that there is simply too
great an analytical gap between the data and the opinion
proffered”).

(...)

Although the result of
that equation would be mathematically sound if properly
applied by the jury, there is concern that the high royalty
base would cause the jury to deviate upward from the
proper outcome. Id. Thus, in Uniloc, we noted that “[t]he
disclosure that a company has made $19 billion dollars in
revenue from an infringing product cannot help but skew
the damages horizon for the jury, regardless of the contribution
of the patented component to this revenue.” Id.
Similarly, here, the use of a 50/50 starting point—itself
unjustified by evidence about the particular facts—
provides a baseline from which juries might hesitate to
stray, even if the evidence supported a radically different
split

A federal appeals court on Tuesday [Sept. 16, 2014] threw out a jury order requiring Apple Inc to pay VirnetX Holding Corp $368.2 million in damages for infringing four patents concerning technology for providing security over the Internet.

Shares of VirnetX plunged as much as 59.8 percent after the U.S. Federal Circuit Court of Appeals in Washington ordered a new trial, and said the damages award was based on defective jury instructions.

That leaves two lessons for Apple. One is never, never, never to let those over 40 decide what music they think younger consumers are bound to think is cool. The other is that, with $100 million in expense and 2 million downloads, $50 an album for a digital release is probably a bit much. Especially when you don't get the collector's version special cover art? Ah, well, Apple will weather this as it has other challenges and continue to rattle and hum along.

Saturday, September 13, 2014

In a post by Lisa Rein titled -- U.S. Patent office: ‘We are committed to taking any measures necessary’ to address telework fraud --, one learns that the USPTO will be hiring an outside consulting firm to look into the handling of bonuses:

Commerce and patent office officials told congressional investigators Friday [Sept. 12, 2014] they have launched an internal review of the telework program and are seeking an outside consulting firm to advise them on how managers can improve their monitoring of more than 8,000 patent examiners, according to a congressional aide familiar with the briefing before staff of the House Oversight and Government Reform Committee.

Among the issues the outside consultant will be asked to address is whether, in their zeal to increase the productivity of examiners in recent years to shrink a backlog of applications, patent office leaders were too quick to give employees bonuses for work they didn’t complete.

As to the telework program, some changes have already been implemented:

[Todd] Elmer said the patent office has now implemented “new requirements” for all teleworkers and given managers new tools to identity potential abuse “and take appropriate actions.” His statement did not give details of the changes, but patent office officials told congressional staff on Friday that they now require examiners who work remotely to log into the agency’s internal computer network so their bosses can communicate with them.

There was a dispute about the charge of end-loading:

More than 70 percent of the 80 managers interviewed told the internal review team that a “significant” number of examiners did not work for long periods, then rushed to get their reviews done at the end of each quarter. The supervisors were concerned that the practice negatively affected the quality of the work.

But on Friday, the officials said many examiners are actually working in the early weeks of the quarter, doing research or speaking with inventors applying for patents. This legwork does not show up in the computer that measures whether they are getting their work done, they told congressional investigators.

New York Times on self-plagiarism

Of an essay piece published in the New York Times that Žižek had sent, the Times noted

After this essay was published, a reader pointed out that several sections had originally appeared, in identical or substantially similar form, in Slavoj Zizek's 2008 book, "Violence: Six Sideways Reflections." The New York Times does not ordinarily reprint material that has been previously published; Op-Ed contributors are asked to affirm that their work is original, and exclusive to The Times. Had The Times known that portions of the essay were copied from an earlier work, it would not have accepted the essay for publication.

Prior to the Poshard plagiarism matter at SIU, there was the Wendler self-plagiarism matter [Walter Wendler copied material he created while at Texas A&M into a proposal while he was employed at SIU ]. SIU gave self-plagiarism a pass.

Now, iParadigms has put out a white paper, "The Ethics of Self-Plagiarism.

Thursday, September 11, 2014

Mixed bag in Interval Licensing

Nautilus is cited:

With this lone example, a skilled artisan is still left to wonder what other
forms of display are unobtrusive and non-distracting.
What if a displayed image takes up 20% of the screen
space occupied by the primary application with which the user is interacting? Is
the image unobtrusive? The specification offers no
indication, thus leaving the skilled artisan to consult the “unpredictable vagaries of any one person’s
opinion.” See Datamize , 417 F.3d at 1350.
Such ambiguity falls within
“the innovation - discouraging ‘zone of uncertainty’ against
which [the Supreme Court] has warned.” Nautilus , 134 S. Ct. at 2130 (internal citation omitted).

Scientific Plastics at the CAFC: what can happen when there are mistakes in the specification

SPP argues that the Board improperly relied on the
inventors’ description of the problem solved
in order to find the solution obvious, an analytic procedure that relies
on hindsight by using the inventors’ own reasoning
against them.

SPP points out that the statement in
the patents that threaded connections are not used with
plastic LPLC cartridges was actually
incorrect, as evidenced by the Yamada
reference, which shows a plastic LPLC
cartridge with threaded connections.
SPP argues that a person of ordinary skill
would not have perceived
any need to improve such cartridges, and that only
through improper hindsight
was the Board able to
justify its finding of a known leakage problem.

Judge Moore dissented:

I dissent from the majority because this record does not
contain substantial evidence that one of skill in the rele-
vant art would have modified the chromatography car-
tridge in Yamada by replacing its sealing configuration
with that of a soda pop bottle. (...)

One of skill in the art would not have modified Yamada to fix a
leakage problem that never existed in the first place.
You wouldn’t seek to “improve [a] sealing arrangement” that
doesn’t leak. (...)

It is troubling that the majority and the
Board rely on the inventors’ disclosure
of the problem their inventions
solve as the primary basis for modifying the prior art.
This is hindsight of the worst kind, “wherein that which
only the invention taught is used against its teacher.” (...)

The Board’s failure to make this determination
is especially pernicious where the analogous art question is far
from clear. Soda pop bottles and methods for using chro-
matography cartridges are
clearly not in the same field of endeavor.

Sunday, September 07, 2014

CBS Sunday Morning on September 7, 2014

Charles Osgood introduced the stories for September 7, 2014. The cover story, on One-room schools, is covered by Barry Peterson. Then, discussion of World War I, wherein 8.5 million soldiers died between 1914 and 1918. Third, Tracy Smith interviews Steve Buscemi, who once worked as a fireman. Fourth, a tribute to Joan Rivers. Also, stories by Terrell Brown, Steve Hartman, and Joel Sartori.

Headlines. Obama does an about-face on immigration reform. US airstrikes targeting ISIS. Two day truce in Ukraine problematic. Lava flow in Hawaii. Nishitori wins at US Open. Weather: sunny and pleasant in most of US. Remnants of Hurricane Norbert in California.

Barry Peterson reports on the "one room schoolhouse," starting with the "Divide School" in district 4 in Montana. There are 200 one-room schools in the US.

Terrell Brown interviews Madeleine Peyroux, who has been likened to Billie Holiday. A little bit of pain. Peyroux grew up in Georgia. Mother moved to Paris when Madeleine was 11.
Deirdre Westgate. Wikipedia notes: Peyroux started singing at the age of fifteen, when she discovered street musicians in the Latin Quarter in Paris. Peyroux initially declined an offered record deal.

Martha Teichen on "The Great War." On Sept 7, 1914, 600 taxis shuttled 6000 re-enforcements to the battlefield at Marne. Two million men fought. In absolute numbers, WWI defies previous numbers. The lesson from the war: want to avoid war. On June 28, 1914, Franz-Ferdinand shot by Serbian nationalist. On July 28, Austria Hungary declared war on Serbia.
Real Patriots Keep Cool. Song in US: I didn't raise my boy to be a soldier. Stanford prof: Daivd Kennedy. Wilson re-elected in 1916: he kept us out of war. April 6, 1917: US declares war. Propaganda war. Shift from saying this was not our war. Persuading people.
Demonizing the enemy. US had 90 million people; 30 million were foreign born.
Joyce Kilmer's story. The Peacemaker. "to meet the fires of hell." Miriam Kilmer is his grand-daughter. In 1916, the first tanks. More than 2 million American soldiers. Kilmer was shot by a sniper in July 1918. "In Flanders field, the poppies grow." 8.5 million soldiers died. Deep disillusionment after WWI.

Joel Sartori on the passenger pigeon. "Martha," the last passenger pigeon, now stuffed in the Smithsonian, died Sept. 1, 1914. Scientists are using dan to insert into the band-tailed pigeon. "De-extinction." Should we be doing this? Will people think extinction is not a problem, because it is reversible? Relict darter is on brink of extinction. Test-tube menagerie?
Second chances are very rare things.

Richard Schlesinger on the life, and death, of Joan Rivers. Quote from Al Roker,introducing Joan: she's 78 years young. Her response, here's Al Roker, all 320 pounds. Another line:
My g-spot has been declared a historical landmark. Cardiac arrest on August 28. A quiet end to a life lived at full volume. Towels: his and herpes. Donate her body to Tupperware.
Scared that when she died, God won't recognize her. Degree from Barnard. Her career: this is what I am supposed to do. Success in February 1965; she was 31. In 1966, on Sammy Davis show. Became a fixture on Tonight Show for 20 years. Carson was not her friend; never invited to Tonight Christmas party. Rivers launched show on Fox; Carson never spoke to her again. Edgar Rosenberg committed suicide after Rivers' show cancelled. She later sold handbags, etc. Desparate for something to do. I had to find something fast. Go through every door. Rivers was great in the funny business. Too busy to retire. Rivers spoke to Mo Rocca: actual death easier than dying on stage. Why can't you be like your cousin Sheila.

Steve Hartman at Minnesota State Fair. Making dough. Martha Olson's cookies. Back to 1979: cookie booth at state fair. This year, grossed 2.4 million dollars. Sweet Martha's Cookie Jar. Serve them hot and serve a lot. A bucket of cookies for $15. Take home pail. Remember to smile.

Tracy Smith on Steve Buscemi, of Boardwalk Empire. Armageddon. Reservoir Dogs. The Wedding Singer. Con Air. Fargo. Sympathetic creepy guys. There has to be something Buscemi likes.
Father wanted all sons to take civil service exam. He was looking at for his sons. Engine 55 in Manhattan. Moonlighted as actor. Movie "Parting Glances." Nobody leaves job as fireman.
In 1985, cast as drug dealer in Miami Vice. Sleazy, seedy character. Spy Kids 2. Made the most of how I look. If you only fixed your teeth. Lives in Brooklyn townhouse. Cyanotype picture. When the curtain comes down. Met his wife when he was a firefighter. Married in 1987. When 9/11 happened, Buscemi volunteered for work at ground zero. Something about being there was very comforting. Documentary "A good job" premieres tomorrow night. Inside look at what it means to be a firefighter in NYC. Wife: he's my guy, my connection to this world.

Nancy Giles on "Enter Talking" by Joan Rivers. Her parents told her she was absolutely without talent. Pepper January. Comedy flowed from Joan Wollensky, the schlep. Her life began in 1965, on Tonight Show. Carson: you're going to be a star. She never lied about her cosmetic surgery. Rivers regularly sent thank you notes to co-workers. If you can see it, you can be it. We stand on her shoulders, gratefully.

Pulse. How likely is another world war in your lifetime? very likely 30% somewhat likely 37%

The district court granted Google’s motion
for judgment on the pleadings , holding that the asserted
claims fall outside section 101.
The court concluded that the
patent “describes a well-known, and widely-understood
concept—a third party guarantee of a sales transaction
—and then applied that concept using conventional comput-
er technology and the Internet.” buySAFE, 964 F. Supp.
2d at 335–36.

The CAFC noted:

Given the new Supreme Court authority in
this delicate area, and the simplicity of the present case
under that authority, there is no need to parse
our own precedents here.

How much will China's Ruichuan IPR Funds resemble Intellectual Ventures?

Last month, IAM reported on the launch of Beijing-based patent aggregation entity Ruichuan IPR Funds. At the time, facts about its plans and structure were thin on the ground; but, with the help of contacts in the Chinese IP marketplace, I have been able to piece together some additional detail on the entity and its objectives.

One head of IP at a Chinese corporate told me that Ruichuan’s initial objective is defensive, but things could quickly become more complex as it tries to secure a return for its investors and further its strategic goals. “To my knowledge, the fund is focused on defence in the beginning, in order to help Xiaomi and other Chinese companies pave their way into overseas markets,” he explained. “In order to build up a strong patent portfolio, they will also invest a lot in third-party R&D, including working with universities and research institutions in China, acquiring innovations, and so on. I think it could be more like IV [Intellectual Ventures] by that stage.”

These aims are reflected to an extent in Ruichuan’s management team. The entity’s general manager is Lin Peng, a former executive director of patent licensing at Intellectual Ventures who has also held roles at Microsoft and Cargill, among others. Lin is also president and chief operating officer at Zhigu IP, the firm that is behind the creation of Ruichuan. Zhigu’s chairman is Zhang Hongjiang, who is also CEO of internet business Kingsoft. (It is also worth noting that the head of IP at Xiaomi, Zhang Liang, is another IV alumnus.)

And this spring, China descended to new depths by launching a state-funded and -operated patent assertion entity (PAE) named Ruichuan IPR Funds. In addition to distorting free trade and global free markets in favor of Chinese industry via government support, the new PAE will likely engage in that familiar habit of hacking and espionage against non-Chinese enterprises. The new PAE also demonstrates that the perceived problem of "patent trolls" can no longer be considered merely a private sector threat.
(...)
Now faced with the threat of foreign trolls such as Ruichuan IPR Funds, American companies may find themselves warding off more than just the typical domestic patent troll lawsuit. Instead, they'll also find themselves defending their operations against entities backed by the resources and force of foreign governments – a very unfair battle of resources.

As to IV, recall the history of US 6182894 :

Intellectual Ventures I LLC and Intellectual Ventures II LLC (collectively,
“IV”) sued PNC Financial Services Group, Inc. and PNC Bank, N.A. (collectively,
“PNC”) on May 29, 2013. IV alleges that PNC’s Visa Check Card system/service
infringes 15 claims of U.S. Pat. No. 6,182,894 (“the ’894 patent”), which has a filing
date of October 28, 1998. See Ex. 1006 at ¶¶ 32-37; Ex. 1009 at 1. Two weeks later,
on June 12, 2013, IV sued Bank of America Corporation and Bank of America,
National Association (“BANA”) for infringement of at least claim 18 of the ’894
patent in the Western District of North Carolina.

(...)
In its Final Written Decision, the Board granted entry of adverse judgment against Patent Owner and cancelled claims 1-18 of the ’894 Patent

Tuesday, September 02, 2014

Blue Origin and SpaceX fighting at PTAB over Blue Origin's US 8,678,321

In IPR2014-01376, SpaceX asserts, among other things, that there is anticipation of claims of Blue Origin's US '321: " Each limitation of claims 1, 2, and 3 is disclosed by Ishijima." [Yoshiyuki Ishijima et al. , Re-entry and Terminal Guidance for Vertical-Landing TSTO (Two-Stage to Orbit), ]

SpaceX is represented by Heidi L. Keefe of Cooley LLP.

As background, the launch site in Ishijima is the Tanegashima Space Center on the island of Tanegashima, off the southern tip of Kyushu, Japan.

The PETITION FOR INTER PARTES REVIEW OF U.S. PATENT NO. 8,678,321,
was served by EXPRESS MAIL ® on the 25th day of August, 2014.

US '321 issued on March 25, 2014 based upon 12/815,306, filed June 14, 2010 .

Note PCT/US2010/038553. The "written opinion," transmitted in Dec. 2010, had found the 20 examined claims to lack inventive step (ie, were obvious). There was national phase entry into China, and other jurisdictions:

Inter partes review is a new trial proceeding conducted at the Board to review the patentability of one or more claims in a patent only on a ground that could be raised under §§ 102 or 103, and only on the basis of prior art consisting of patents or printed publications. Inter partes review process begins with a third party (a person who is not the owner of the patent) filing a petition after the later of either: (1) 9 months after the grant of the patent or issuance of a reissue patent; or (2) if a post grant review is instituted, the termination of the post grant review. The patent owner may file a preliminary response to the petition. An inter partes review may be instituted upon a showing that there is a reasonable likelihood that the petitioner would prevail with respect to at least one claim challenged. If the proceeding is instituted and not dismissed, a final determination by the Board will be issued within 1 year (extendable for good cause by 6 months). The procedure for conducting inter partes review will take effect on September 16, 2012, and applies to any patent issued before, on, or after September 16, 2012.

As to post grant review: A post grant review may be requested on or prior to the date that is 9 months after the grant of a patent or issuance of a reissue patent.

AND

Inter partes review can be initiated immediately following issuance (or reissuance) of patents examined under the first to invent rules (i.e., patents filed prior to March 16, 2013), since post-grant review is not available for these patents.

Inter partes review became available for all patents on September 16, 2012, regardless of priority date.
Inter partes review is subject to an additional limitation relating to co-pending litigation involving the patent being reviewed. Both post-grant review and inter partes review need to be filed before the third party seeks a declaratory judgment challenging the validity of a claim in the patent. In addition, an inter partes review must be filed within one year of the third party being served with an infringement complaint by the patentee.
The standard of proof required to justify commencement of an inter partes review is also slightly different than the standard of proof required to trigger commencement of post-grant review. For an inter partes review to be commenced, a third party must establish a reasonable likelihood that they will prevail on at least one claim, as opposed to post-grant review’s requirement that at least one challenged claim is more likely than not to be deemed unpatentable. The AIA fails to specifically address this difference in standards, leading to widely varying speculation about whether there will be a significant difference in the way a request under inter partes review is treated relative to post-grant review.
The prior art available for inter partes review is limited relative to post-grant review. Inter partes review is akin to inter partes reexamination in that it is limited to prior art grounds based on patents and printed publications, whereas post-grant review can be based on any grounds that are available for an invalidity defense. Significantly, this constraint limits the estoppel effects of inter partes review relative to post-grant review. Post-grant review may preclude a third party from raising virtually any invalidity defense in litigation. The scope of legal estoppel for inter partes review is commensurate with current inter partes reexamination estoppel. Thus, even if it has availed itself of inter partes review, a third party should retain their ability to raise invalidity defenses in other fora based on all grounds other than patents and printed publications that were or reasonably could have been raised during the inter partes review.

Monday, September 01, 2014

Plagiarism in Korea

What is uniquely Korean then, is its culture of education. Shaming public figures if and when they happen to get caught is no solution and if Korean schools condone plagiarism by failing to adequately punish plagiarists, the risks will remain acceptable. Yet the remedy is in the root, the best defense being an educated youth and an edifying history from which to draw. Chronicling Spartan history, Plutarch writes when asked why Sparta was without walls, King Agesilaos II pointed to his men and answered, “these are Sparta’s walls.”

About Me

I'm a patent lawyer located in central New Jersey. I have a J.D. from the University of Chicago and a Ph.D. from Stanford University, where I studied graphite intercalation compounds at the Center for Materials Research. I worked at Exxon Corporate Research in areas ranging from engine deposits through coal and petroleum to fullerenes. An article that I wrote in The Trademark Reporter, 1994, 84, 379-407 on color trademarks was cited by Supreme Court in Qualitex v. Jacobson, 514 US 159 (1995) and the methodology was adopted
in the Capri case in N.D. Ill. An article that I wrote on DNA profiling was cited by the Colorado Supreme Court (Shreck case) and a Florida appellate court (Brim case). I was interviewed by NHK-TV about the Jan-Hendrik Schon affair. I am developing ipABC, an entity that combines rigorous IP analytics with study of business models, to optimize utilization of intellectual property. I can be reached at C8AsF5 at yahoo.com.